EPO – Appeal proceedings – Scope of discretion to disregard late submissions

Posted: October 19th, 2018

EPO, Technical Board of Appeal 3.2.05, decision of June 13, 2018 in case T 1914/12

The patent in suit directed to a method of adhesive bonding had been revoked on the grounds of lack of inventive step starting from document D51 as closest prior art in combination with document D3. In appeal proceedings, the proprietor identified a further feature, distinguishing the adhesive used in the claimed method from D51. In its communication accompanying the summons, the Board expressed its intention not to admit this late filed submission. During oral proceedings, the proprietor argued that not admitting the submission on the basis of the Rules of Procedure of the Boards of Appeal (RPBA) would violate higher ranking principles in the Convention and the right of the parties to a fair trial as a principle of procedural law generally recognized in the Contracting States.

In its decision, the Board concludes that the submission is to be admitted. The headnote (translated from the French original) reads:

The Boards of Appeal do not have a discretionary power concerning the admission of late arguments which are based on facts already in appeal proceedings (deviation from T 1621/09)

The Board offers definitions for facts and arguments:

A fact may be understood as a factual element (or an alleged factual element) or a circumstance on which a party bases its claims whereas argument denotes a proposition which a party bases on one or several facts and which supports the party’s case.

In case of a novelty objection, the Board understands lack of novelty over a specific paragraph of a cited document to be the opponent’s case, i.e. the proposition that the claimed subject-matter is comprised in the state of the art. The case is supported by certain arguments concerning the disclosure of the claimed subject-matter in the cited text, e.g. how the skilled person understands a feature. The argumentation is based on the fact built by the document.

The Board points to the difference between the terms used in Article 114 (1) and (2) EPC. Paragraph 1 on examination ex officio mentions facts, evidence and arguments whereas paragraph 2 on the discretion to disregard submissions only mentions facts and evidence. As to the RPBA, the Board notes that Article 13 does not expressly address arguments. Indirectly, the term “amendment to a party’s case” refers to Article 12 (2) obliging the parties to present their full case, specifying expressly all the facts, arguments and evidence. Citing the travaux préparatoires to Article 13, the Board finds that the Presidium of the Boards of Appeal in its proposal to the Patent Law Committee of the Administrative Council deleted the “arguments” from the submissions which may be disregarded at the Board’s discretion.

Analyzing the case law of the Boards of Appeal, the decision cites the Enlarged Board of Appeal stating in G 4/92:
“… new arguments do not constitute new grounds or evidence, but are reasons based on the facts and evidence which have already been put forward”, and in G 4/95:

“In general, arguments on the basis of previously submitted facts and evidence are allowed at any stage of opposition or opposition appeal proceedings, under the discretion of the EPO.”

Decisions T 1069/08 and T 1621/09 are presented as the the main examples in the case law simply applying Article 13 (1) in conjunction with Art. 12 (2) RPBA for non-admitting new arguments by ignoring the higher-ranking provision of Article 114 (2) EPC. However, the case law is not consistent, other decisions emphasize the obligation to admit late submissions based on facts already in the procedure.

The Board concludes that the RPBA may specify and interpret the provisions of the EPC but cannot confer powers on the Boards of Appeal which the Convention does not give them. This is reflected in the RPBA themselves, stipulating:
“These Rules of Procedure shall be binding upon the Boards of Appeal, provided that they do not lead to a situation which would be incompatible with the spirit and purpose of the Convention.”

It may appear tempting to increase the output of the Boards of Appeal by restricting the parties’ rights to make submissions. However, it has been shown that such restrictions shift the emphasis from substantive discussions to procedural discussions and to formal aspects of the proceedings without resulting in shorter proceedings and shorter decisions (epi Information 2/15, 63).

The reported decision puts the question of the interpretation of Article 13 (1) RPBA in the proper context: The parties’ right to be heard, the limited power to disregard late submissions and the hierarchy of legal provisions in the European patent system (lex superior derogat legi inferiori).

Certainly, the decision cannot solve all problems, e.g. the distinction between new facts and facts already in the proceedings may need further precision to be developed in further case law. However, the well-written decision should give reason for a clarifying amendment to Article 12, 13 in the ongoing process of revising the RPBA. The Rules of Procedure for the UPC might serve as an appropriate model, stipulating in Rule 222 (1), 1st sentence, for appeal proceedings:

“Requests, facts and evidence which have not been submitted by a party during proceedings before the Court of First Instance may be disregarded by the Court of Appeal.”

A copy of the decision (in French) can be read here.

Reported by: Dr. Rudolf Teschemacher

One Response

  1. Attentive Observer says:

    I get the feeling that there are diverging opinions within the BA on what can be submitted late or not.

    Some BA are very restrictive, and some more lenient. The decision at stake seems wanting to bring clarity in the matter.

    As Art 114(2) in its English text excludes arguments, the present BA came to the conclusion that arguments are never late.

    If a novelty objection was based on § 7 of a document, coming later with § 8 of the same document is a late fact, not a late argument, and hence left to the discretion of the BA to accept it or not.

    If on the basis of the same § you come back with a totally new way of dealing with the matter, i.e. a new line of argumentation, you might discuss whether it is a new fact or a new argument. It will be late anyway, and its admissibility should be discussed before a decision on the substance.

    The same goes when you bring in a new document, i.e. new evidence. On the basis of the new evidence, you will bring a new fact linked to a new argument. Here again there is some discretion left to admit the late submission or not.

    An argument is not late if it is within the legal and factual framework of the opposition or of the appeal procedure. An already filed “true” argument can always be emphasized, hence emphasizing an argument already present in the discussion should indeed not be considered late. But any argument, or better line of argumentation, which creeps up later is to be considered late.

    To me nothing much has to change, but the concepts of evidence/fact/argument need to be clarified. What is late will remain late. It is thus in my opinion more a battle on labels, than a battle on substance.

    It would be good if the EBA brought in some order as the text in the three official languages allow different interpretations. But common sense should prevail!

    The reference to the RoP of the UPC is not useful, as it does not deal with the problem. It is not by avoiding the “naughty” word “argument” that the problem disappears. It is still there!
    And nobody knows when it will come, or if it will come!

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